DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 8, 10-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakano et al. (WO2021/153754, with priority to 1/31/20; with US2023/0102860 used solely as an English translation for citation purposes).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 8, 10-13, Nakano broadly teaches the claimed compounds within their broad disclosure and specifically exemplifies structurally similar compounds to those instantly claimed, e.g. specifically those of formula II-IV and table 18 compounds 430-437 wherein each of the compounds has their R1 group in the same position as applicant’s R3 group and they specifically teach the claimed methyl group as applicant’s R3 for instance in compounds 430-433, and wherein applicant’s R4 corresponds to Nakano’s R5 and is methyl, and wherein Nakano’s R4 corresponds to the Ra substituted phenyl groups instantly claimed and n=1 and Nakano broadly teaches wherein their substituted phenyl can be substituted with the claimed C1-C4 alkyl in place of the Cl or CF3 substituents on the phenyl ring they exemplify in formula II-IV and table 18 compounds 430-437 and Nakano teaches wherein the claimed n=1 and the claimed Ra groups can be the claimed C1-C4 alkyl, and wherein applicant’s R2 is N as claimed which read on the compounds used in applicants method claims 2-7 (see [0143]; Table IV-18 compounds 430-437; abstract; [0046, embodiments 4-7, etc.]; [0015-0032]; [0044]; [0143]; claims).
Regarding claim 14, Nakano teaches forming compositions with their structurally similar compounds and/or the compounds instantly claimed which are broadly disclosed in Nakano which comprise auxiliary agents, e.g. solid or liquid carriers, etc. ([0111-0115]; [0007]; [0006]; [0032]; [0116-0117]; abstract; Claims; [0155]; [0143]; Table IV-18 compounds 430-437; [0015-0032]; [0046, embodiments 4-7, etc.]; [0015-0032]; [0044]).
Regarding claim 15, Nakano broadly teaches that their compounds can be used to combat phytopathogenic fungi, by applying to the pathogenic fungi effective amounts of their compounds which are structurally similar to those instantly claimed and/or they broadly disclose the instantly claims within their broadest scope of compounds and teach using their entire scope of compounds to combat phytopathogenic fungi, by applying to the pathogenic fungi effective amounts of their compounds (see [0143]; Table IV-18 compounds 430-437; [0007]; [0006]; [0032]; [0116-0117]; abstract; Claims; [0155]; [0015-0032]; [0046, embodiments 4-7, etc.]; [0015-0032]; [0044]).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Nakano does not specifically teach the claimed compounds. However, it would have been obvious to have formed the claimed compounds when looking to the broad disclosure of Nakano and to specifically modify their structurally similar compounds of formula II-IV and table 18 compounds 430-437 to have instead as the substitution on their R4 phenyl group, which corresponds to the claimed Ra where n=1 the disclosed C1-C4 alkyl groups which are also instantly claimed in order to form the claimed compounds because Nakano clearly teaches that their substituted phenyl groups at their R4 can be the claimed Ra where n=1, e.g. the claimed alkyl groups and that these compounds exhibit fungicidal activity just as is instantly claimed.
Nakano teaches agrochemicals broadly comprising the claimed compounds and with the claimed auxiliary agents and methods for combatting phytopathogenic fungi comprising treating plants or plant propagation material of plants at risk of being diseased by said phytopathogenic fungi and/or applying to said phytopathogenic fungi as is discussed above.
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed the claimed compounds, compositions and methods when looking to Nakano because Nakano exemplifies structurally similar compounds to those instantly claimed specifically compounds of formula II-IV and table 18 compounds 430-437 which only differ in that their R4 which corresponds to the phenyl group having Ra wherein n=1 has different substituents on the phenyl ring than the claimed Ra. However, it would have been obvious to form the claimed compounds wherein their phenyl is substituted with C1-C4 alkyl as applicant’s Ra substituent because Nakano already teaches wherein their R4 phenyl groups can be substituted with C1-C4 alkyl groups which only optionally are substituted with halogens. Thus, it would be obvious to form the claimed methyl as applicant’s Ra and n=1 in place of the CF3 group of Nakano’s 432-433 for instance because Nakano clearly teaches that their substituents on the R4 phenyl ring can be unsubstituted C1 alkyl/methyl group as is instantly claimed and discussed above.
It would have been obvious to one of ordinary skill in the art to form the claimed compositions comprising applicant’s compounds because Nakano broadly teaches compounds which overlap in scope with the claimed compounds and exemplifies structurally similar compounds as discussed above and further broadly teaches wherein these compounds can be formulated with auxiliary agents, e.g. carriers for use/application, which read on and render obvious the claimed compositions. One of ordinary skill in the art would be motivated to form the claimed compounds and compositions and methods because Nakano broadly teaches the claimed compounds and teaches wherein their compounds are typically applied in combination/composition with carriers, etc. and are being used in the same methods to combat phytopathogenic fungi with the same active steps as instantly claimed and as such one of ordinary skill in the art would be motivated to form the claimed compounds in order to form additional compounds, compositions and methods which are useful for combatting phytopathogenic fungi.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 8, 10-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-15 of copending Application No. 17920795 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘795 claims an overlapping scope of the same compounds which are being used in the same compositions and methods which are instantly claimed. Thus, one of ordinary skill in the art would conclude that the instant application is obvious when taken in view of copending Application No. 17920795.
Claims 8, 10-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-15 of copending Application No. 17920797 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘797 claims an overlapping scope of the same compounds which are being used in the same compositions and methods which are instantly claimed. Thus, the compounds wherein both R1 and R2 are NH and N respectively, anticipate the instantly claimed compounds, compositions and methods. Thus, one of ordinary skill in the art would conclude that the instant application is obvious when taken in view of copending Application No. 17920797.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 8, 10-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-15 of copending Application No. 17920796 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘798 claims an overlapping scope of the same compounds which are being used in the same compositions and methods which are instantly claimed. Thus, the compounds wherein both R1 and R2 are NH and N respectively, anticipate the instantly claimed compounds, compositions and methods. Thus, one of ordinary skill in the art would conclude that the instant application is obvious when taken in view of copending Application No. 17920796.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 8, 10-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 12-14 of copending Application No. 18015361 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘361 claims homologous and/or very structurally similar compounds to those instantly claimed which only differ in that the instantly claimed R4 is H in ‘361 vs the instantly claimed methyl group which are being used in the same compositions and methods which are instantly claimed. One of ordinary skill in the art would be motivated to make the claimed compounds wherein applicant’s R4 is methyl when looking to ‘361 because H/Me only differ by the addition of a CH2 group and as such are homologous compounds. Thus, one of ordinary skill in the art would conclude that the instant application is obvious when taken in view of copending Application No. 18015361.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 8, 10-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-13, and 15 of copending Application No. 18019501 (reference application) in view of Patani et al. (Chem. Rev., 1996, 96, 3147-3176). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘501 claims structurally similar compounds to those instantly claimed which only differ in that the instantly claimed phenyl group with Ra is het group, specifically pyridyl group in the compounds of ‘501 and these similar compounds are being used in the same kinds of compositions and methods which are instantly claimed. One of ordinary skill in the art would be motivated to make the claimed compounds wherein the Het group of ‘501 is the claimed phenyl group with Ra because pyridine and phenyl are classical bioisosteric replacements of one another as is taught by Patani (see pg. 3158, E. ring equivalents, first paragraph). Thus, one of ordinary skill in the art would conclude that the instant application is obvious when taken in view of copending Application No. 18019501 in view of Patani.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments/Remarks
Applicant’s amendments to the claims have rendered moot/overcome the previous 112 rejections which are hereby withdrawn. Applicants amendments to the claims to cancel claims 2-7 have overcome all rejections under 103 and double patenting over these claims.
Applicant’s arguments with respect to the 103 rejections of record were not persuasive at this time. Firstly, applicants argue that Nakano does not teach wherein R3 is alkyl, specifically C1-C2 alkyl. The examiner respectfully disagrees as Nakano clearly teaches multiple examples wherein the instant R3 is alkyl. So this argument is not persuasive. Further, while the examples in Nakano do not teach wherein the Ra substitution on the phenyl ring is the claimed alkyl groups they do teach that the Ra substitution can be the claimed C1-C4 alkyl groups and that these compounds exhibit fungicidal activity just as is instantly claimed. Applicants further argue that Nakano only teaches efficacy and superior efficacy for some of their compounds. The examiner respectfully points out that Nakano is prior art for all it teaches even non-preferred embodiments and that Nakano’s teachings are not only limited to the examples, and as discussed above Nakano clearly teaches examples wherein R3 is alkyl in their exemplified compounds and therefore clearly envisions making such compounds for their invention and the compounds of Nakano remain obvious for the same reasons discussed above and already of record.
Applicants then argue that their comparison data of alkyl vs H at R3 and that the compounds with alkyl exhibited improved fungicidal activity over the compounds with hydrogen. The examiner notes that the claimed results are not commensurate in scope with the instant claims. In looking closer at applicant’s data the examiner notes that the improved fungicidal activity over compounds having H at R3 also appears to be related to what group is present at applicant’s R2 as the argued results are not markedly improved in the examples wherein R2 is CH and these results do not appear to be statistically significant over the comparative examples wherein R2 is also CH and R3 is alkyl contrary to applicants arguments that these compounds also exhibit improved fungicidal activity. Thus, applicants argued results are not commensurate in scope with the instant claims at this time and the claimed compounds remain obvious when taken in view of the prior art at this time for the above reasons. The examiner notes that when relying on evidence, “The evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992).
Regarding the double patenting rejections applicants argue that their amendments render the instant claims patentably distinct. The examiner respectfully disagrees because the claimed compounds still remain obvious for the above reasons of record especially in the absence of evidence to the contrary.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at (571)-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN E HIRT/Primary Examiner, Art Unit 1617